Ex Parte Grace

Board of Patent Appeals and Interferences

Feb 28, 2012

11436258 (B.P.A.I. Feb. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHARLOTTE GRACE
__________

Appeal 2010-009147
Application 11/436,258
Technology Center 3700
__________

Before ERIC GRIMES, LORA M. GREEN, and ERICA A. FRANKLIN,
Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a male
condom. The Patent Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Claims 1 and 3-13 are on appeal. Claim 1 is representative and reads
as follows:

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1. An improved male condom comprising:
a flexible tubular body having a predetermined length and a
longitudinal axis, the tubular body comprising a wall having a closed end, an
open end, an inner wall surface, and an outer wall surface, said tubular body
comprising a substantially homogeneous, longitudinally flexible material;
said wall having a first predetermined thickness and a second
predetermined thickness, wherein said first predetermined thickness is
relatively less than said second thickness;
said wall including a plurality of rib members radially extending from
said outer wall surface, said rib members having a rib length extending
longitudinally of and substantially parallel to said longitudinal axis and
extending along at least a majority of a longitudinal portion of said tubular
body, said rib members being configured to provide said second
predetermined thickness to the wall of said condom; and
said closed end including a protruding reservoir tip adapted to at least
partially contain ejaculate of a wearer of said condom.

The Examiner rejected the claims as follows:
• claims 1, 3-5 and 8-10 under 35 U.S.C. § 103(a) as unpatentable
over Clark,
1
DeRidder,
2
and Ireland;
3

• claims 6, 7 and 11-13 under 35 U.S.C. § 103(a) as unpatentable
over Clark, DeRidder, Ireland, and Shelton;
4

• claims 8-13 under 35 U.S.C. § 103(a) as unpatentable over Clark,
Shelton, and DeRidder.

1
US Patent No. 3,759,254 issued to Claud W. Clark, Sep. 18, 1973.
2
US Patent No. 5,509,891 issued to Paul A. DeRidder, Apr. 23, 1996.
3
US Patent No. 5,855,206 issued to Jud Ireland, Jan. 5, 1999.
4
Patent No. US D517,205 S issued to Ricky D. Shelton, Mar. 14, 2006.

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Application 11/436,258

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OBVIOUSNESS
The Issue
For each of the obviousness rejections, the Examiner’s position is that
Clark disclosed a hygienic appliance comprising a flexible tubular portion
13 comprising a substantially homogeneous flexible material, having a first
thickness 23 and a second thickness 51, wherein the first thickness is less
than the second thickness. (Ans. 3.) The Examiner found that Clark’s
element 51 is a flexible rib formed of rubber, which is longitudinally
flexible. (Id.) However, the Examiner found that Clark did not disclose
including a plurality of radially extending ribs. (Id.)
The Examiner found that DeRidder taught the use of a plurality of
radially spaced ribs for a penile prosthesis. (Id. at 4.) According to the
Examiner, it would have been obvious to a person of ordinary skill in the art
at the time the invention was made to duplicate the rib 51 of Clark and to
space them radially to provide enhanced penile support as taught by
DeRidder. (Id.) The Examiner reasoned that duplicating the components of
a prior art device is a design consideration within the skill in the art. (Id.)
Regarding the rejection over Clark, DeRidder, and Ireland, Appellant
contends that the combination does not teach or suggest the features of
independent claims 1 and 8. In particular, Appellant asserts that “the
cartilaginous stiffening rib 51 of Clark does not anticipate the plurality of
longitudinally flexible rib portion provided in independent claims 1 and 8”
because rib 51 of Clark “acts as a prosthesis.” (App. Br. 5.) Appellant
asserts that DeRidder also “does not meet the limitation of the claims as
DeRidder utilizes a heterogeneous material combination to longitudinally
stiffen the prosthesis disclosed therein.” (Id. at 6.)
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Regarding the rejection over Clark, Shelton, and DeRidder, Appellant
contends that the combination does not teach or suggest the features of claim
8. (Id.) In particular, Appellant contends that Clark and DeRidder “do not
disclose or teach a condom having a plurality of circumferentially spaced,
longitudinally extending flexible rib members….” (Id. at 7.) Appellant
asserts that “Clark discloses a single rib, as does DeRidder.” (Id. at 7.)
According to Appellant, “[w]hile DeRidder discloses the use of three
stiffeners, DeRidder does not disclose a plurality of ribs.” (Id.) Specifically,
Appellant disagrees with the Examiner’s position that if DeRidder’s Figure 7
showed all three ribs 28, 30, and 32, each rib would be shown with two
different dimensions, i.e., with a different relative thickness than the wall, as
shown only for stiffener 30. (Id.) According to Appellant, DeRidder
“discloses increasing the sheath thickness only about the stiffeners 30” and
“does NOT disclose an increase of thickness in the area of those additional
stiffeners [28 and 32].” (Id.)
Additionally, Appellant asserts that DeRidder “does not meet the
limitation of the claims as DeRidder utilizes a heterogeneous material
combination to longitudinally stiffen the prosthesis disclosed therein.” (Id.)
Further, Appellant asserts that “Clark and DeRidder both include stiffening
members, thereby removing longitudinal flexibility….” (Id.)
Appellant does not raise separate arguments for the rejection over
Clark, DeRidder, Ireland and Shelton. (Id. at 6.)
The issue is whether the preponderance of the evidence supports the
Examiner’s conclusion that the cited references would have made the
claimed condom obvious.
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Findings of Fact
1. We agree with the Examiner’s explicit findings regarding the scope
and content of the prior art references (see Ans. 3-5) and additionally find, in
particular, the following:
2. Clark disclosed that its invention is “[a] resilient and flexible
prophylactic and contraceptive generative male organ appliance” that may
include “an elongated cartilaginous rib portion along the length of the
tubular portion as a prosthetic aid to copulation.” (Clark Abstract.)
3. Clark expressly described element 51 as “a relatively stiff, but
flexible, cartilaginous rib portion 51” which may be “provided parallel to the
longitudinal axis” of the tubular portion, which itself is part of a flexible
unitary body construction preferably fabricated using well known rubber or
synthetic flexible materials. (Id. at col. 2, ll. 57-59; col. 3, ll. 8-10, 32-36.)
4. DeRidder’s Figures 6 and 7 are reproduced below:

DeRidder’s Figure 6 is a cross sectional view of a prosthesis of the invention
and Figure 7 is a cross sectional view of a prosthesis with stiffeners of the
invention in a condom sheath of conventional film thickness. (DeRidder col.
2, ll. 28-32.)
5. DeRidder states, “[v]arious alternative forms of the prosthesis can be
provided: as shown in FIG. 6, three stiffeners 28, 30 and 32 can be provided,
one at each side and one on the top of the prosthesis.” (DeRidder col. 3, ll.
29-32.)
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6. DeRidder states,
In some applications, it may be desirable to limit the film
thickness of the sheath in the non-reinforced areas. As shown
in FIG. 7, this can be accomplished by increasing the sheath
thickness only about the stiffeners 30, resulting in the illustrated
cross-section in which the thickness of the sheath 12 in the
region 36 of the stiffener 30 is from 2 to 5 times greater than
the thickness of the film in the other areas 38 of the sheath 12.

(Id. at col. 3, ll. 33-40.)
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
Analysis
I. The Rejection over Clark, DeRidder and Ireland
After considering all the evidence and arguments, we conclude that
the record supports a conclusion of prima facie obviousness. We are not
persuaded of nonobviousness by Appellant’s assertions that the combination
of Clark and DeRidder does not provide a plurality of rib members radially
extending from the outer wall surface. (App. Br. 5.) According to
Appellant, “the cartilaginous stiffening rib 51 of Clark does not anticipate
the plurality of longitudinally flexible rib portion provided in independent
claims 1 and 8,” asserting that rib 51 of Clark “acts as a prosthesis.” (App.
Br. 5.) More accurately, Clark disclosed that its invention is “[a] resilient
and flexible prophylactic and contraceptive generative male organ
appliance” that may include “an elongated cartilaginous rib portion along the
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Application 11/436,258

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length of the tubular portion as a prosthetic aid….” (FF-2.) Appellant’s
claims broadly recite a condom or an improved male condom (see App. Br.
9, Claims App’x., Claims 1 and 8) which do not exclude Clark’s
prophylactic and contraceptive appliance including a prosthetic aid. To the
extent that Appellant asserts that the claimed condom “is designed to act as a
girth enhancement for the user of the condom,” Appellant has not shown that
this intended use structurally distinguishes the claimed product from the
product made obvious by the prior art. Regarding the “longitudinally
extending flexible rib members” recited in claim 8, Clark expressly
described element 51 as “a relatively stiff, but flexible, cartilaginous rib
portion 51” which may be “provided parallel to the longitudinal axis” of the
tubular portion, which itself is part of a flexible unitary body construction
preferably fabricated using well known rubber or synthetic flexible
materials. (FF-3)(emphasis added).
The Examiner acknowledged that Clark only disclosed one such rib
element and relied on DeRidder for the suggestion to modify Clark to
include a plurality of rib elements 51. (Ans. 4.) Specifically, the Examiner
found that DeRidder taught the use of a plurality of radially spaced ribs for a
penile prosthesis. (Id.) Appellant asserts that DeRidder “does not meet the
limitation of the claims as DeRidder utilizes a heterogeneous material
combination to longitudinally stiffen the prosthesis disclosed therein.”
(App. Br. 6.) We remain unpersuaded by this argument, as the Examiner
relied on DeRidder for the suggestion to provide Clark with a plurality of rib
element 51, and not for the material that DeRidder used.
Accordingly, we affirm the rejection of independent claims 1 and 8
over Clark, DeRidder, and Ireland. Because Appellant has not argued
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dependent claims 3-5 and 9-10 separately, these claims fall with independent
claims 1 and 8. 37 C.F.R. § 41.37(c)(1)(vii).
II. The Rejection over Clark, DeRidder, Ireland and Shelton
Appellant has not raised separate arguments for the rejection over
Clark, DeRidder, Ireland and Shelton, asserting only that the rejected claims
“depend from independent claims believed to be allowable.” (App. Br. 6.)
Consequently, we are not persuaded of nonobviousness for the reasons
discussed regarding the rejections of independent claims 1 and 8.
Accordingly, we affirm the rejection of claims 6, 7, and 11-13 over
Clark, DeRidder, Ireland and Shelton.
III. The Rejection over Clark, Shelton and DeRidder
After considering all the evidence and arguments, we conclude that
the record supports a conclusion of prima facie obviousness. We are not
persuaded of nonobviousness by Appellant’s assertions that (i) DeRidder
“does not meet the limitation of the claims as DeRidder utilizes a
heterogeneous material combination to longitudinally stiffen the prosthesis
disclosed therein” (App. Br. 7) and (ii) “Clark and DeRidder both include
stiffening members, thereby removing longitudinal flexibility….” (id.) for
the same reasons discussed regarding the rejection over Clark, DeRidder and
Ireland.
Appellant further asserts that “[w]hile DeRidder discloses the use of
three stiffeners, DeRidder does not disclose a plurality of ribs.” (Id.)
Specifically, Appellant disagrees with the Examiner’s position (Ans. 6-7)
that if DeRidder’s Figure 7 showed all three ribs 28, 30, and 32, each rib
would be shown with two different dimensions, i.e., with a different relative
thickness than the wall, as shown only for stiffener 30 (App. Br. 7).
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According to Appellant, DeRidder only discloses a single rib by “increasing
the sheath thickness only about the stiffeners 30,” and “does NOT disclose
an increase of thickness in the area of those additional stiffeners [28 and
32].” (Id.)
We think the Examiner has the better position. DeRidder’s Figure 6
shows an embodiment comprising three stiffeners 28, 30 and 32. (FF-4, 5.)
DeRidder expressly disclosed limiting the film thickness of the sheath in the
non-reinforced areas “by increasing the sheath thickness only about the
stiffeners 30,” as shown in Figure 7. (FF-6.) We find that a person of
ordinary skill in the art would have reasonably understood these disclosures
to teach that the sheath thickness may be increased about each of the
“stiffeners,” and not just the stiffener shown in Figure 7. Indeed, DeRidder
described Figure 7 as “a cross sectional view of a prosthesis with stiffeners
of the invention in a condom sheath of conventional film thickness” (FF-
4)(emphasis added) even though only one stiffener 30 is shown in Figure 7.
Thus, we agree with the Examiner that that DeRidder’s Figure 7 and
disclosure of “stiffeners 30” represented each of the three stiffeners 28, 30
and 32.
Consequently, we are not persuaded of nonobviousness by
Appellant’s arguments.
Accordingly, we affirm the rejection of independent claim 8 over
Clark, Shelton, and DeRidder. Because Appellant has not argued dependent
claims 9-13 separately, these claims fall with independent claim 8. 37
C.F.R. § 41.37(c)(1)(vii).

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CONCLUSION OF LAW
The preponderance of the evidence supports the Examiner’s
conclusion that the cited references would have made the claimed condom
obvious.

SUMMARY
We affirm the rejection of claims 1, 3-5 and 8-10 under 35 U.S.C. §
103(a) as unpatentable over Clark, DeRidder, and Ireland;
we affirm the rejection of claims 6, 7 and 11-13 under 35 U.S.C. §
103(a) as unpatentable over Clark, DeRidder, Ireland, and Shelton;
we affirm the rejection of claims 8-13 under 35 U.S.C. § 103(a) as
unpatentable over Clark, Shelton, and DeRidder.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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